News Updates
The Canadian Intellectual Property Office (CIPO) has recently announced the expansion of its Patent Prosecution Highway (PPH) trial initiative. The PPH has been available in cooperation with the US Patent and Trademark Office (USPTO) since January 2008, and has now been expanded as of October 2010 to additionally include the Japanese Patent Office (JPO), Danish Patent and Trademark Office (DKPTO), and the Korean Intellectual Property Office (KIPO). The PPH allows for the acceleration of examination of a patent application in a second jurisdiction, if a corresponding patent application filed in a participating first jurisdiction has been found allowable and/or granted. There are several further requirements for a patent application filed in a second jurisdiction to qualify for accelerated examination, including that the second application have claims that sufficiently correspond to the allowed claims in the first application, and that the second application claim priority from or share a parent PCT application with the first allowed application. Also, typically both the first and second patent applications must be open for public inspection or published. The expanded CIPO PPH program may be useful for accelerating the examination of Canadian patent applications that claim priority from first filed applications in the USPTO, JPO, DKPTO or KIPO, and that also meet the other requirements for participation in the PPH such as including sufficiently corresponding claims. More information regarding the details of the CIPO PPH program may be found on the CIPO PPH website at: http://www.cipo.ic.gc.ca/pph/, or by contacting our office at the email or phone numbers listed below.
Graeme Herring
Patent Associate
DEAN PALMER IP LAW / IPROPERTY INC.
New horizon in the US trademark landscape
Canadian owners of US trademarks may be interested to know that a recent decision of the United States Court of Appeals for the Federal Circuit is set to change the way the TTAB will be dealing with fraud on the United States Patent and Trademark Office. In Re Bose Corporation the Federal Circuit has found that Bose Corporation, the owner of the WAVE trademark, did not commit fraud on the United States Patent and Trademark Office (USPTO) when it claimed that it had used its trademark on all the wares in its registration, including on audio tape recorders and players, when in fact it had discontinued manufacturing and selling these products several years prior to the filing of the Section 8 & 9 declaration of use and renewal.
The Federal Circuit's ruling in Bose marks the end of a long line of cases which followed the US Trademark Trial and Appeal Board (TTAB)’s decision in Medinol. Medinol had established the standard for fraud by asking whether the applicant “knew or should have known that the statement of use is materially incorrect”, thus lowering the standard for fraud from a subjective intent to deceive to simple negligence. Following the Medinol rule, the TTAB could and had found fraud and cancelled an entire registration, without need of evidence of intent to deceive, on the ground of false statement of use with regard to some (not necessarily all) of the goods or services in the registration which the registrant knew or should have known to be false.
The new Bose rule, which effectively overrules the Medinol rule and the standard for fraud it established, should however be considered carefully by trademark owners. The Federal Circuit declined to resolve the issue of whether “making a submission to the [US]PTO with reckless disregard of its truth or falsity satisfies the intent to deceive requirement”. As such, although Bose recognizes that “subjective intent to deceive” may be difficult to prove because “direct evidence of descriptive intent is rarely available”, a “willful intent to deceive” may still be inferred from indirect and circumstantial evidence, provided the evidence is clear and convincing. It remains to be seen how the TTAB and the US Courts will be dealing with future fraud cases in the context of the new standard set in Bose, while keeping the US used-based trademark system from falling apart.
Laura Cojocaru
DEAN PALMER IP LAW / IPROPERTY INC.